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Intellectual PropertyFeaturesTrade SecretsTrademarksLJN NewslettersThe Intellectual Property Strategist

Protecting Product Packaging and Product Configuration

By Marcus S. Harris

On Dec. 16, 2016, Diageo North America, Inc. (Diageo) sued Sazerac Company, Inc., and Sazerac Brands, LLC (collectively Sazerac) in the United States District Court for the Southern District of New York, claiming, among other things, that Sazerac had committed willful trademark infringement, trade dress infringement, unfair competition and deceptive trade practices. Diageo North America, Inc. v. Sazerac Company, Inc., No. 16 CV 09747 (S.D.N.Y.).

Diageo alleged that Sazerac had redesigned its Dr. McGillicuddy's whiskey bottle and label to knock-off the appearance and unfairly trade on the reputation of Diageo's BULLEIT® brand bourbon and rye whiskey and its distinctive canteen-shaped bottle. According to Diageo, the BULLEIT canteen-shaped bottle, with its embossed lettering and rectangular label (the Bulleit Trade Dress), is intended to evoke the rugged look and feel of the American frontier. Diageo owns incontestable U.S. Trademark Registration No. 3,075,812 for the three dimensional configuration of the BULLEIT canteen-shaped bottle. In addition to injunctive relief, and the destruction of all of Sazerac's allegedly infringing materials such as labels, signs, prints, packages, and advertisements, Diageo sought unspecified money damages.

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